Ex Parte Atkinson

Patent Trial and Appeal Board

Mar 4, 2014

12454711 (P.T.A.B. Mar. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/454,711 05/21/2009 Roscoe Atkinson 4062.44US03 7234
24113 7590 03/05/2014
PATTERSON THUENTE PEDERSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH STREET
MINNEAPOLIS, MN 55402-2100
EXAMINER
WANG, JIN CHENG
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
03/05/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROSCOE ATKINSON
___________

Appeal 2011-012580
Application 12/454,711
Technology Center 2600
____________

Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/454,711

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This is an appeal under 35 U.S.C. § 134(a) of the final rejection
claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We heard oral
arguments on February 20, 2014. A transcript will be included in the record
in due time.
We reverse.

STATEMENT OF THE CASE
THE INVENTION
Appellant’s invention relates to improving a magnified image by
integrating a wavelength specific component into that image. A magnified
image is obtained, and a wavelength specific (single spectrum) image is
obtained. The images are divided into components (e.g., in color space such
as L*a*b*). A component of the wavelength specific component is used to
enhance (e.g., by replacement) a corresponding component of the magnified
image. See generally Abstract.
Claim 1, reproduced below, is illustrative with a disputed limitation in
italics:
1. A method of enhancing a digital image, comprising:
using a multi-spectral imaging system to obtain a first
digital image comprising a microscope image indicative of a
sample, and a second digital image indicative of the same
sample but which covers substantially only a single spectrum;
dividing the first digital image into component parts
indicative of the first digital image;
dividing the second digital image into component parts
indicative of the second digital image; and
enhancing the image quality of the first digital image by
replacing one of the component parts of the first digital image
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with a corresponding component part of the second digital
image.

THE REJECTIONS
Claims 1-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Yang (US 2001/0036304 A1), Takahashi (US 2005/0111017 A1), and Smith
(US 2008/0260218 A1).

Rather than repeat the arguments here, we refer to Appellant’s Appeal
Brief (“App. Br.” filed March 3, 2011), Appellant’s Reply Brief (“Reply
Br.” filed June 10, 2011), and the Examiner’s Answer (“Ans.” mailed May
12, 2011) for the respective positions of Appellant and the Examiner.

ISSUE
Appellant’s arguments present us with the dispositive issue: Has the
Examiner erred in finding the combination of Yang, Takahashi, and Smith
teaches or suggests “enhancing the image quality of the first digital image by
replacing one of the component parts of the first digital image with a
corresponding component part of the second digital image,” as recited in
claim 1?1

ANALYSIS
We are persuaded by Appellant’s arguments that the references, taken
alone or together, fail to teach the disputed limitation. App. Br. 10-11.

1 Appellant’s contentions regarding the claims present additional issues.
Because we are persuaded of error with regard to the identified issue, which
is dispositive as to claims on appeal, we do not reach the additional issues.
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More specifically, we find none of the references, individually or in
combination, teaches or suggests replacing a component of the first image
with a corresponding component of the second image where the second
image is an image of the same sample as the first image.
The Examiner finds Yang teaches various Boolean, arithmetic, and
algebraic functions that may be performed in combining a first image and a
second image. Ans. 6-9, 25-27. Appellant contends, “these operations
cannot properly be said to involve replacement of one image component
with a component of another image.” App. Br. 12. We agree. The cited
passages of Yang disclose generating a new image as the combination of a
first image and a second image according to various functions but do not
teach or suggest replacing any components of the first image, as required by
claim 1.
The Examiner also asserts a contrast enhancement mode of Yang
teaches or suggests the disputed limitation. Ans. 5 (citing Yang ¶¶ 0066-
0069). We do not agree. Yang paragraph 0068 discloses, “[a]lternatively,
the user can change to a contrast-enhance view mode wherein the RGB
image is shown and the intensity values for each color can be stretched to fit
any range between 0 and 255.” Yang’s contrast enhancement adjustment
allows a user to adjust the intensity of each color of an RGB image between
0 and 255. Again, we find no teaching or suggestion that such adjustment of
components of the first image teaches or suggests replacement of a
component of the first image with a corresponding component of the second
image that is of the same sample as the first image.
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The Examiner further finds Takahashi replaces all pixels having an
identified color value in a first image with a substituted, designated color
value selected by the user. Ans. 10-11, 29.
Appellant contends
the user generated pixels described in Takahashi ‘017 cannot be
said to be taken from an image of the same sample that was the
subject of the first image. They are generated by user selection,
not taken from another image of the same subject as the first
image, as would be necessary to meet the limitations of claim 1.
App. Br. 13. We agree. The pixel color value in Takahashi that replaces
each identified pixel in the first image is not a component of a second image
that is indicative of the same sample as the first image, as required by claim
1, but rather is a color value selected by the user. Takahashi, ¶ 0233 (“In
step S4904, the user selects a desired color from color samples in a color
sample name input area 5001 so as to designate a color to be actually output
as the designated color.”).
The Examiner further finds Smith replaces a component (in the
L*a*b* space) of a first image by shifting a component (i.e., the L
component) to adjust for a reference color that comprises a portion of the
first image (i.e., to normalize the colors of the first image based on a
reference color in the image). Ans. 13, 29-30. Appellant contends Smith
does not “describe two images of the same sample as claimed—rather, they
describe color correction of a single image based on comparison of
‘reference colors’ included in a ‘reference label 24’ affixed to the sample
with the ‘true value’ of the reference color.” App. Br. 13-14. We agree. A
component of the first image of Smith is corrected (i.e., a component of the
first image is replaced) based on a reference color of the first image—not by
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replacing the component of the first image with a corresponding component
of the second image that is indicative of the same sample.
We, therefore, agree with Appellant that none of the references, taken
alone, teaches or suggests the disputed limitation. In combining the
references, the Examiner reasons, “[h]aving the combined teaching, one of
the ordinary skill in the art would have been motivated to provide a
brightness/intensity/luminance/lightness-enhanced image (Takahashi Figs.
17,21,26 and 30) by adjusting the component L in the Lab color space.”
Ans. 12; see also Ans. 14. Based on this reasoning of the Examiner, we fail
to understand how the combination of references, whether or not properly
combined, teaches the disputed limitation.
In view of the above discussion, we are persuaded the Examiner erred
in finding the combination of Yang, Takahashi, and Smith teaches or
suggests “enhancing the image quality of the first digital image by replacing
one of the component parts of the first digital image with a corresponding
component part of the second digital image” as recited in claim 1.
Independent claim 8 includes a similar limitation and was rejected for the
same reasons. For the same reasons as claim 1, we are persuaded the
Examiner erred in rejecting claim 8 and claims 2-7 dependent from claim 1.

DECISION
For the above reasons, the rejection of claims 1-8 under 35 U.S.C.
§ 103 is reversed.

REVERSED

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